Narrow Product Configuration Registration Makes Confusion Unlikely
The application stated that "the mark consists of the configuration of a fence rail" shown below.
The applicant filed an amendment to the Supplemental Register in response to an initial refusal to register the mark on the grounds of functionality and non-distinctiveness. The functionality refusal was not maintained and was deemed by the Board to be withdrawn.
The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant's mark, when applied to applicant's goods, so resembles the registered mark shown below for "non-metal fence rails" in Class 192 as to be likely to cause confusion.
The latter mark was described in the registration as follows:
The mark consists of a configuration of the bottom portion of a fence rail bearing the exterior rounded shoulders and the recessed edges. The diagonal bands of vertical shading lines and other lining shown in the drawing are not features of the mark and are intended only to show perspective. The broken lines indicate the placement of the mark on the goods and are not features of the mark. The drawing depicts a section of the product configuration and no limitations on length or size
Administrative Trademark Judge Holtzman began by noting that when marks would appear on identical goods, the degree of similarity between the marks necessary to support a finding of likely confusion declines. However,
John Welch at the TTABlog points out that, perhaps, the Board should have left out the part about the weakness of the registered mark. "There was no evidence that the patented designs were on the market, and therefore no evidence that purchasers were 'accustomed' to making distinctions based on more subtle differences," writes John. "Clearly the marks were dissimilar, and there was no real need to add this point about the patent evidence."
The portion of registrant's mark shown in broken lines is not part of the registered mark. . . .
As stated in the cited registration, the depiction of the upper portion of the rail above the channel is included in the drawing only to show perspective. By construing the mark as including
this matter for purposes of the likelihood of confusion analysis, the examining attorney has improperly broadened registrant's rights in the mark and has given registrant protection for matter that is not part of its registered mark.
Registrant's entire mark is the flourish on the lowermost portion of the outer edges of the rail channel, a very limited and specific portion of the entire fence rail. This is the only portion of the overall product configuration that is protected by the registration. Therefore, in our analysis, we must consider only the flourish as registrant's mark, as it is shown in the registration, and we will not consider the overall product shape on which the mark might be used.
We turn then to the appropriate comparison between the marks, with certain considerations in mind. First, it is the overall visual impression of the marks derived from viewing the
marks in their entireties that is controlling rather than an analysis of the specific details. See Dan Robbins & Associates,
Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100 (CCPA
1979). The marks are similar in their placement on the product and to the extent that they both have a slight taper at the lower lip of the channel on either side of the channel opening.
However, we find that the visual differences in the marks are more significant than the similarities. The overall impression of registrant's mark is soft, curved and rounded, and the overall impression of applicant's flourish is severe, angular and linear. Based on the total effect of the respective marks, rather than their individual features, we find that the differences in the marks are sufficient to distinguish them.
We must also consider the marks in their proper context, that is, as the product shapes would be encountered by purchasers in the actual marketing environment, including their proper visual scale. It is obvious that the drawing is not representative of the actual size or length of the rails. Inactual use the rails are much larger and the respective flourishes are more visible and noticeable, which, in turn, would make the differences in the designs more noticeable, as well. We note, in this regard, Mr. Coen's statement that the respective designs are noticeable from a distance on "an erected fence from the road."
Moreover, in view of the nature of the ornamental design,
it appears, in this particular situation, that the registered mark
is entitled to only a narrow scope of protection. The design and
utility patents for fence rails show that the rails are often constructed with a channel at one end to receive fence panels.
We also note that at least two of the design patents of record
(Nos. D500,866; and D497,432) cover what appear to be subtle
flourishes at the channel end of the rail, suggesting that it is not particularly unique or unusual to place an ornamental design in this portion of the rail, and that purchasers of fence rails would be accustomed to making distinctions based on more subtle differences in the marks.
In view of the foregoing, we find, notwithstanding the identity of the goods, that considering the narrow scope of protection to which registrant's mark is entitled and the relative sophistication of the purchasers for the goods, the marks are sufficiently dissimilar to avoid a likelihood of confusion.